Wednesday, 27 October 2010

T 699/06 – A Bilocation Problem

The present decision goes into some detail to explain why a request for postponement (well, as we shall see, the Board would not use this word) of oral proceedings (OPs) could (should) have been refused.

[1] Article 15(2) RPBA provides as follows:
“A change of date for OPs may exceptionally be allowed in the Board’s discretion following receipt of a written and reasoned request made as far as in advance of the appointed date as possible.”
Some guidance is to be found in the Notice dated 16 July 2007 concerning OPs before the boards of appeal (“the Notice” - last published in OJ EPO, 1/2010, Supplement, pages 67-68, paragraphs 2.1 and 2.2) as to reasons for non-attendance at OPs by a party (not, it must be noted, non-attendance by a representative per se) which may or may not be accepted as sufficient to fix a new date.

[2] It is to be noted that the official texts use the expressions “change of date” and “fix a new date” rather than “postponement”. In the Board’s view this is significant. Postponement of OPs to a later date necessarily has the consequence that the later date becomes unavailable for OPs in another appeal and thus all the appeals pending before the Board in which OPs may be necessary are, however minimally, postponed. This is unfair on those parties in other appeals who do not want postponements but who must thereby wait at least a little longer for OPs and for a decision. This effect on other parties to other appeals is a consideration the Board must take into account in exercising its discretion […]. It is also why the Board, if satisfied that a change of date is necessary, will usually consider first the possibility of bringing forward rather than postponing the OPs.

[3] It is inherent in the discretionary nature of the decision whether or not to change a date for OPs that a request will not simply succeed just because the reasons for it fall within the examples of acceptable reasons in the Notice.

It must be noted that those examples are given as “serious substantive reasons to request the change of date of OPs” ([…], emphasis added). It is significant that they are called “reasons to request the change of date” and not “reasons to allow the change of date”. That can only mean that those reasons, or other comparably serious substantive reasons, are required before a request will even be considered but that such reasons are not in themselves bound to or, according to the circumstances, even likely to result in a change of date. This is supported by case law which shows that one of the exemplified reasons (in that case, pre-booked holidays) may not in itself be sufficient:
“...while holiday is a possible valid basis for a request, it is not necessarily a sufficient reason for postponement. All circumstances of the case and all the criteria referred to in the Notice have to be taken into account by the Board when exercising its discretion” (see T 1102/03 [2]).
[4] The Notice also provides […] that,
“Every request for fixing another date for OPs should contain a statement why another representative within the meaning of A 133(3) or A 134 cannot substitute the representative prevented from attending the OPs.”
Therefore, when the reason for a request to fix another date is based on the non-attendance of a representative, there are two stages in the Board’s discretionary decision. First, it must decide whether the representative in question is prevented from attending. Second, if and when the Board is satisfied that the representative is prevented from attending, it must then consider whether another representative can substitute for the prevented representative.

The [patent proprietor’s] requests to postpone the OPs

[5] Applying these provisions to the present case, the Board had no difficulty in deciding that the [patent proprietor’s] requests, both as originally presented and in their renewed form, did not justify a change of date of OPs.

[6] The reason given for making the original request was that the representative was due to speak at a conference which ran from 12 to 14 April 2010. He did not then give the exact date on which he was due to speak, although it appeared from his later request that this was in fact 13 April 2010 (in fact, the day before the OPs).

Such a commitment - to speak at a conference - is additional to the normal professional responsibilities of a representative. A representative who undertakes such a commitment does so in the knowledge that this will make him unavailable to his clients, and unavailable to appear at any OPs, on the date or dates in question. Therefore, as a reason for changing the date of OPs, it is a reason which by definition results from excessive work pressure - excessive if only because it is a commitment which the representative was not obliged to undertake but which, having undertaken it, makes him unavailable. Excessive work pressure is specifically mentioned in the Notice as a non-acceptable reason […]. In view of the clear meaning of “reasons to request” in paragraph 2.1 of the Notice […], the examples of non-acceptable reasons in paragraph 2.2 are equally clearly examples of reasons which are unacceptable as reasons even to request a change of date. Accordingly, such reasons cannot attract a favourable exercise of the Board’s discretion.

[7] In his renewed request for postponement of the OPs, the representative wrote, with reference to the Board’s communication of 19 January 2010 refusing his original request, that he was surprised that the reasons supporting his previous request were considered insufficient as work pressure reasons, and that he had not intended to convey that his reasons were of a work pressure nature but simply that he could not “be in two places at one time”.

The Board entirely accepts that he did not intend to convey that his original reason (there was only one reason - the conference speaking engagement) was a work pressure reason. However, he should not have been surprised that the Board should view that reason as a work pressure reason. As his later letter put it, he could not “be in two places at one time”: when that situation arises for work-related reasons, then it is quite clearly “excessive work pressure”.

[8] The Board considers it likely that what the representative really meant was that he was surprised that a conference speaking commitment was not regarded as an adequate reason. As indicated above […], the Board cannot see how such a commitment can ever in itself be an acceptable reason for a change of date. Several requests for change of date are based on such engagements - speaking at conferences, lecture tours, attending trade shows, even staffing stands at exhibitions. Such marketing activities are now commonplace activities for professionals such as lawyers, patent attorneys and others who act as representatives and are no doubt considered an important part of their business activities. However, the sheer frequency or importance to representatives of such activities does not make them any more acceptable as reasons to request a change of date. On the contrary, the more they are frequent and/or important, the more must those who undertake them ensure that they do not prevent attendance at OPs (if necessary, by a substitute […]).

No responsible representative would deliberately delay his or her client’s case for a marketing opportunity. If a representative asked a client “Do you mind if I postpone your case while I market my firm’s services to others?” the answer would be obvious. The Board’s refusal to entertain such marketing commitments as reasons to request changes of OPs dates is merely the equivalent answer, not just for itself but also on behalf of other parties and the public […].

[9] The renewed request of the [patent proprietor’s] representative identified a new reason for requesting postponement of the OPs, namely that he had a pre-booked holiday from 9 to 16 April 2010. (Curiously, since his previous reason was that he would be attending a conference from 12 to 14 April 2010, this meant that for three days he would in fact, to use his own expression, be in two places at one time.)

The Notice […] gives pre-booked holidays as an example of an acceptable reason to request a change of date. As already indicated […], that does not mean a change of date is to be allowed without more, but it does mean the request must then be considered in the light of all the circumstances. In the present case the Board assumed at this stage that the new reason could be acceptable and proceeded to the question of substitution.

Substitution of another representative

[10] In a case such as the present, where the putative non-attendance is that of a representative, one of those circumstances is the possibility of substitution by another representative - indeed it is a necessary second step in the Board’s consideration […]. When, regardless of other circumstances, it may be conclusive for the request, it becomes appropriate to consider it once the requesting party has demonstrated an acceptable reason for making the request.

A key factor in the assessment of the substitution question is the time available between, on the one hand, the date of making the request and, on the other hand, the date appointed for the OPs. If the time between those two dates is on any objective view sufficient to allow a replacement representative to prepare adequately then, as regards this consideration, the Board cannot exercise its discretion in favour of a change of date.

(Article 15(2) RPBA requires the request to be made “as far as in advance of the appointed date as possible”; thus, if the request has not been made promptly on receipt of the summons to OPs, the date to be taken for measuring the start of the time period available should clearly be the date when the request could and should have been made. Otherwise, those seeking to delay could circumvent the substitution question by simply waiting until the near the date of the OPs.)

[11] In the present case, the need to consider the question of substitution did not arise on the request as first made although the Board did, in its communication of 19 January 2010 refusing that first request, state that, even if it had been satisfied that the [patent proprietor’s] representative was not prevented from attending, it was not satisfied that another representative could not substitute for him.

In this respect the representative had submitted that his firm’s “Life Science team [were] all committed to attend” the conference at which he was to speak. Thus essentially the same work pressure reason was put forward for the inability of any other representative (at least within the same firm […]) to substitute for the current representative.

The summons for OPs had been sent to the parties with the Board’s letter dated 15 December 2009, thus almost four months before the scheduled date of 14 April 2010 - which was also the last day of the conference. At the date of the communication, there still remained almost three months until the OPs which clearly allowed ample time either to change the date of the representative’s talk at the conference, or to find an alternative speaker, or for another representative to familiarise him- or herself with the case. Moreover, as mentioned above […], it must be incumbent on representatives who undertake marketing activities to ensure that their other duties can be dealt with. Thus to accept a conference speaking engagement without arranging for such duties as may arise to be covered by others must entail a risk. To send all those who might provide such cover to the same marketing event entails the yet higher risk of no-one being able to perform those duties at all.

[12] As indicated above […], when the renewed request to change the date of OPs was made, the Board treated the representative’s pre-booked holiday as an acceptable reason for making the request and thus proceeded directly to the question of a substitute. In this respect, the representative argued that a party has the right to select a representative and, if he is unable to attend OPs, it is unreasonable to insist that he be replaced. The Board agrees entirely with the first statement and disagrees entirely with the second.

A party does indeed have the right to be represented by the representative of its choice. However, that does not then give the selected representative the right to a postponement of OPs by reason of any other commitment he or she may have undertaken. If that was the case, paragraph 2.3 of the Notice would serve no purpose. There is no question of the Board, or anyone else, insisting on a replacement - if a representative has by his own choice made himself unavailable, the Board must exercise its discretion under Article 15(2) RPBA and take account of other factors as well as the selected representative’s convenience. To allow a change of date purely for such convenience would allow one party (indeed, one party’s representative) to make its own arrangements and then to dictate changes to others which would be inherently unfair. No one party can arrogate to itself, let alone one representative arrogate to him- or herself, the management of the Board’s proceedings.

[13] It follows that the Board cannot envisage a combination of the following circumstances as being “exceptional” as required by Article 15(2) RPBA, namely:
(a) the non-availability of a party’s representative (which, if for a non-acceptable reason such as a marketing event, is the end of the matter […] or, if for a satisfactory reason, is only a reason for making the request and still requires consideration of all the circumstances including a possible substitute […]); and
(b) that party’s natural preference for that representative (which is the party’s right but which may not dictate a change of date […]); and
(c) adequate time to instruct an alternative (adequate time being an objective question to be decided on the facts of each case […]).

A request for postponement in such circumstances amounts (without more) to a request to meet the convenience of one person (the unavailable representative) to the possible prejudice of others. To allow such a request would thus be inherently unfair.

[14] As regards the [patent proprietor’s] representative’s additional submissions for non-substitution, the Board could not accept either the age of the patent and/or the advanced stage of the proceedings as reasons for non-substitution - on the contrary, both were self-evidently equally good (if not better) reasons for ensuring the appeal was disposed of without further delay.

As for the submission that there was only one possible substitute in the representative’s firm (not, the Board notes, a “team” who were “all” unavailable as previously submitted) who was also unavailable because he would not only be speaking at the conference as well but also be manning an exhibition stand, the Board’s views expressed above […] apply with the same if not more force.

If European representatives wish to speak at conferences (even with the approval of clients whose cases are thereby delayed), the work of the Boards of Appeal and the interests of their clients’ adversaries and the public should not be affected as a result.

[15] The Board also notes that paragraph 2.3 of the Notice refers to “another representative within the meaning of A 133(3) or A 134”. That is quite clearly not limited to another representative from the same firm as the representative putatively prevented from attending OPs. The question which that paragraph of the Notice addresses is why another representative cannot substitute and not why one of the representative’s colleagues cannot substitute. The question asked is objective and calls for an objective answer; the particular circumstances of the representative’s firm, the availability of others within that firm, the possible inconvenience or cost to that firm or to the party in question are all irrelevant - these are either internal matters for the representative and his or her firm or at most matters which concern only them and their clients.

The inquiry called for by paragraph 2.3 is posited entirely on the non-availability of one European representative or authorised employee and it requires only explanation as to why another European representative or authorised employee cannot take his or her place. The Board sees no scope for reading more into paragraph 2.3.

Consideration of all the circumstances

[16] The Board is obliged to consider requests to change the date of OPs in all the circumstances and not just in the light of the submissions supporting the request. Primarily, this means the board must consider the interests of others. In the immediate context of the present appeal, that means the [opponent].

Of course, if both or all parties to an appeal are agreed that OPs should be postponed, then the Board can in principle agree (see T 1102/03 [2.2]) subject to having notice adequate enough to allow the appointment of OPs in another appeal on the date thereby vacated, so as to avoid any delay to pending appeals.

But, absent any such agreement, the Board has to assume that delay may prejudice other parties and respondents in particular since (unless also appellants) they did not choose to have appeal proceedings. There must be highly persuasive reasons to allow Appellants to delay proceedings they themselves began.

The Board must also consider the interest of parties in other appeals whose cases will be delayed by a postponement […]. It must also consider the wider general public interest in the administration of justice, which can only be served by disposing of appeals as expeditiously as possible, and in having as soon as possible a final decision about the existence or extent of a monopoly right.

[17] Since there was adequate time either for the [patent proprietor’s] representative to change his conference speaking arrangements or for the [patent proprietor] to instruct another representative, the Board was not satisfied that the arguments for a change of date of the OPs, either as originally or subsequently presented, should exceptionally outweigh the other interests it must consider.

Accordingly, both requests for such a change had to be refused. However, since another pending appeal which could be expedited permitted an exchange of dates, the Board took that course. It must be observed such opportunities very seldom arise and are not to be relied on to solve representatives’ availability problems.

This decision leaves a strange impression. The Board finally switched dates but discusses in length why this was a favour rather than a right. It may well be that the postponement (sorry, the change of date) was not justified, but I do not find the Board’s reasoning very convincing. In particular, the “reasons to request” argument (point [3]) and the qualification as “excessive work pressure” (paragraphs [6-7]) sound artificial. I would prefer the Board to bluntly refuse a postponement rather than beat around the bush with far-fetched ad hoc arguments (all the more as the latter then clutter up the case law :-)). Also, I find it weird to see a Board tell a representative that he better take care of his clients rather than doing his self-promotion in conferences. But there are some indications in the text which make me think  that the representative had seriously irritated the Board, which might explain and excuse some of the stranger arguments.

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Myshkin said...

I believe point 8 does a good job of explaining why attendance of a conference should be qualified as "excessive work pressure". There does not seem to be a relevant difference between voluntarily taking on duties that prevent one from having sufficient time to prepare for OPs and voluntarily taking on duties that physically prevent one from attending (because one cannot be in two places at the same time). If anything, being too busy with other patent applications seems to be a better reason for postponement than being busy spending time on marketing commitments.